How to Protect Trademarks on the Internet [Podcast]

Posted December 11, 2012 in Internet Law Podcasts by


Matt:  Welcome to Radio. Your legal solutions start right here. We’ll help you understand your legal issue, find a lawyer in your area and suggest legal forms for legal self-help. 

We’re talking with Enrico Schaefer from Traverse Legal, PLC. Enrico is an attorney who specializes in Internet trademarks, and today we’re discussing how to protect your Internet trademarks.


Biggest Trademark Issues on the Internet

Enrico, many times in the past I’ve heard you refer to the Internet as the Wild West of today, which is true because it’s still kind of in its infantile stage as far as law’s concerned. What are some of the greatest trademark issues on the Internet?

Enrico:  It is the Wild, Wild West because it’s so easy for anyone to register a domain name, put up a website and post comments on someone else’s website. There are bulletin boards. There’s Facebook, Twitter and Google+. You can actually rate someone or their business in Google Places. There’s Yelp. There are all these different opportunities for people to express themselves online.

Part of that self-expression, unfortunately, can be in the form of trademark infringement, where someone’s actually using your trademark to steal your customers or diminish your goodwill. That can occur with a domain name, where someone registers a domain name that’s very similar to your trademark. It doesn’t even have to be identical; if it’s confusingly similar to your trademark then you can make a claim of trademark infringement.

The trademark can be used in the Web page itself in a way that makes it seem like the person whose got that web page is you or they can steal your website design in a way that it appears to consumers who know you that they’re at your website when they’re not.

With email marketing, trademarks can be used inappropriately and we all get those Bank of America spam emails that hopefully, we all know aren’t from Bank of America asking us to check into our account. There are thousands of examples of trademark infringement on the Internet and you have to protect yourself.

What you have to remember is that trademarks are a very important business asset. Fifty percent of Apple’s total, its total market value, is in its trademarks. So you need to treat your trademarks and intellectual property appropriately. That means you have to monitor and you have to protect those trademarks. By doing so, you create a portfolio of enforcement that actually increases the value of the asset.


Steps to Protect Trademarks in the Wild West Internet

Matt:  Enrico, how can a business protect its brand or trademark in this Wild West we call the Internet?

Enrico:  Well, the first thing you need to do is you need to audit your company for trademarks. We get calls from folks all the time, and it’s clear very quickly that they haven’t done an intellectual property audit for trademarks, so they don’t know what all their trademarks are. Now they’ve got their company name, and they’ve got the sense that that’s a trademark, but they also may have products and services and slogans that also qualify for trademark protection. In some instances, a person’s name can also be a trademark if they happen to be famous.

You need to do an audit and identify your trademarks. From there you want to ask, “OK. Am I comfortable with just having a common law trademark?” Because once you start doing business under a name, either as a service or a product, you have common law trademark rights. You don’t have to register your trademarks with the USPTO but it certainly makes sense to do so.

You want to ask, “Am I comfortable having common law trademark rights with a certain level of protection or do I want to register my trademark, my names, my brands, my slogans, my logos, my designs? Do I want to trademark them with the United States Patent and Trademark Office, which is going to give me a much higher level of protection?”

Once you’ve made those decisions and you’ve got your trademark audit in place, and have identified your intellectual property, then you need to monitor your trademark, which can be a challenge. If you’ve got an employee at your business, a simple Google Alert for exact match phrases is a good starting point. If your trademark assets are valuable enough it will make sense to hire a company, or a law firm, or a service that actually provides monitoring for you and reports either daily, weekly, monthly, quarterly or annually on things such as domain registrations which are similar to your mark.

You have to monitor because if you don’t know what’s going on out there, then you’re going to be relying on customers who come to you and say, “Hey, I really had bad service and I want my money returned.”  You’ll look in your files and realize that this isn’t your customer at all, but someone who has been to another website. You don’t want to rely on anecdotal information from your customers to know that there’s a trademark problem on the Internet.

Hemera/ Thinkstock

Once you identify problems, you have to prioritize them. For example, not all returns on your Google Alerts are going to be things that you’re going to have to send out trademark infringement threat letters or notice letters to the person involved. Some things will be important; some things will not. Once you get your priority list in line, then you’ll need to get someone from your company or your attorney to then start sending threat letters and notice letters as appropriate to the folks, whom you believe are infringing your trademark.


Trademark Audits

Matt:  Can you explain what an audit is and how it works for trademark issues?

Enrico:  A trademark audit for many companies, certainly small and medium size businesses, is usually pretty easy. It’s basically going through all your marketing materials and seeing how you’re using you brands. An audit is going to do more than just identify your brands which are trademark worthy; it’s going to actually identify any problems that you might be experiencing unintentionally with the use of your mark.

Are you using the appropriate TM or Circle R in each instance of your mark? If you believe that the logo design is important, is that identical across all of your marketing? How are you presenting your trademarks to consumers? Are you doing it in a way that strengthens your trademarks or potentially weakens or invalidates your trademarks? Are you using your trademarks as common words which can then make them generic and cause you to lose your trademark rights?

Let me give you an easy example of that, I know that’s kind of a tricky one. Google doesn’t ever want to say Google this, because then they’re using Google not as a trademark, but as a verb and when your trademark becomes a verb, then it becomes generic and becomes potentially invalid. You want to make sure that your marketing department is appropriately using your trademarks.


Preventing Your Trademark from Becoming Generic

Once you’ve got all that together, then you can look at the Internet and make sure that, for instance, your vendors, your distributors, the people who you have contractual relationships with, are using those trademarks appropriately. It is very important and a good trademark attorney will tell you that you need to protect your trademarks by contract as well with the folks that you’re giving permission to use your trademarks on things such as marketing displays.

Matt:  With trademark names, I’ve heard you give the Google example before. It’s kind of like Kleenex for example, where the term Kleenex has become synonymous with the word tissue. While we’re talking about saying Google as a verb, how far into the English language does a trademark word need to go to be in danger of becoming generic?

Enrico:  The key test is this: Is the word being used to identify the source and origin of goods and services or is it being used to describe something?  So irrespective of whether or not it’s context is noun or verb, if your brand isn’t being used to identify your company, but instead to identify the type of good, for instance, Kleenex, then you’ve got a potential trademark problem.

Most companies would love to have this challenge that they’re brand is being used by so many people in ways that are describing the goods and services as opposed to source and origin, that they can become genericized. Google is an example. Kleenex is an example. Aspirin is an example. These are examples of companies whose brands became so big, so famous and so generic that eventually they have the risk of losing their trademark rights.

Kleenex has already lost their rights, but Google, of course, still has trademark rights and still enforces it’s trademarks. But it is at risk moving forward with the concept that people are going to say, “‘Google’ now describes ‘search’ as opposed to the company.”

Matt:  Today’s show is sponsored by Traverse Trademark Law and the Traverse Legal Office in Traverse City, Michigan.

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